Professional Licensing Attorney for Riverside, Irvine, Glendale, and Indian Wells
At Grant’s Law Firm, our lawyers assist in technology acquisition; development, distribution and licensing; joint ventures and strategic alliances; Internet contracts, affiliation, co-branding and privacy agreements; nondisclosure, noncompetition and proprietary rights agreements; the registration, protection and licensing of copyrights, trademarks and domain names; trade secrets protection programs; and the sale and licensing of intellectual property.
Licensing Intellectual Property
A license under intellectual property commonly has several component parts beyond the grant and itself, including, a term, territory, renewal provisions, and other limitations deemed vital to the licensor.
Term: many licenses are valid for a particular length of time. This protects the licensor should the value of the license increase, or market conditions change. It also preserves enforceability by ensuring that no license extends beyond the term of IP ownership.
Territory: a license may stipulate what territory the rights pertain to. For example, a license with a territory limited to “North America” (United States/Canada) would not permit a licensee any protection from actions for use in Japan.
A patent license grants you the ability to use someone else’s patent without worry of infringement to their patent. Sometimes, licensing someone else’s technology is a less expensive alternative to patenting your own technology. Other times, for the success of your business, you may not have a choice but to license technology. However, one should not enter into a licensing agreement to be able to use someone else’s technology without some thought.
What kind of license do you want or need ?
Do you want an exclusive license or is it okay for others to use the patent as well (non-exclusive) ? Is it okay only for you and the owner to use the license? How will you pay – a share of profits? A flat rate per period of time ? Do you want the first right of refusal for future technology ? Can you assign the license to another ? Maybe you prefer to buy all rights to the patent outright. Instead of “renting” your license, you may want to “buy” the property, i.e. the patent. These and other questions should be considered.
Trademark and brand licensing
A licensor may grant permission to a licensee to distribute products or services under a trademark, trade name, or service mark. With such a license, the licensee may use the trademark without fear of a claim of trademark infringement by the licensor. Our Attorneys can help draft and negotiate licenses, and advise trademark licensors on potential franchise and antitrust implications of their licenses.
It is especially important when licensing a trademark to require the licensee to maintain a proper amount of quality control in his use
of the mark. Failure to dictate and perform adequate quality control may lead to a loss of all trademark rights in a licensed mark
through what is called a “naked license”.
On the other hand, if too great an amount of control is placed over the licensee, a court may find that a franchise relationship has
been created. This leads to a host of serious problems for the licensor.
Artwork and character licensing
A licensor may grant a permission to a licensee to copy and distribute copyrighted works such as “art”, “logos” or “designs” and characters (e.g., Mickey Mouse). With such license, a licensee need not fear a claim of copyright infringement brought by the copyright owner.
Artistic license is, however, not related to the aforementioned license. It is a euphemism that denotes approaches in art works where dramatic effect is achieved at the expense of factual accuracy.
Contact a Licensing Lawyer at Grant’s law Firm in Orange County, Riverside County, or Los Angeles County for an initial consultation.